Ex Parte Vivlamore

Patent Trials and Appeals Board

Jun 13, 2019

14586551 - (D) (P.T.A.B. Jun. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/586,551 12/30/2014
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
06/17/2019
FIRST NAMED INVENTOR
Ashley Vivlamore
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
26295-27315/US 2779
EXAMINER
REFAI,SAMM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
06/17/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptoc@fenwick.com
fwfacebookpatents@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASHLEY VIVLAMORE
Appeal2018-005298 1
Application 14/586,551 2
Technology Center 3600
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Ashley Vivlamore ("Appellant") seeks our review under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 101 as directed to non-statutory subject matter.
We affirm.
1 Our Decision references Appellant's Appeal Brief ("Appeal Br.," filed
Jan. 25, 2018), Reply Brief ("Reply Br.," filed Apr. 23, 2018), the
Examiner's Answer ("Ans.," mailed Feb. 21, 2018), and the Final Office
Action ("Final Act.," mailed May 26, 2017).
2 Appellant identifies "Facebook, Inc." as the real party in interest. Appeal
Br. 1.
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Application 14/586,551
STATEMENT OF THE CASE
Claimed Invention
Appellant's invention "relates generally to online systems, and in
particular to reviewing content for compliance with policies enforced by an
online system." Spec. ,r 1.
Method claim 1 and computer-readable medium claim 11 are the
independent claims on appeal, and recite substantially similar subject matter.
See Appeal Br. 9, 11 (Claims Appendix). Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A method comprising:
maintaining one or more policies at an online system, the
one or more policies regulating content included in
advertisements presented by the online system;
obtaining information identifying a number of
impressions of each of a plurality of advertisements presented
to one or more users of an online system;
selecting a subset of the advertisements from the plurality
of advertisements, wherein the selected subset of the
advertisements is selected by sampling the plurality of
advertisements by the number of impressions of each
advertisement in of the plurality of advertisements;
determining whether each advertisement in the selected
subset complies with one or more of the one or more policies
enforced by the online system; and
storing results describing the determined compliance of
the advertisements in the selected subset with the one or more
policies enforced by the online system.
Appeal Br. 9 (Claims Appendix).
ANALYSIS
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
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implicit exceptions: "'[l]aws of nature, natural phenomena, and abstract
ideas'" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S.
208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
If the claim is "directed to" an abstract idea for example, we tum to
the second step of the Alice and Mayo framework, where "we must examine
the elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The USPTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
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84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure ("MPEP") § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not "well-understood, routine, conventional"
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See Guidance.
The Examiner determined claims 1-20 "are directed to the abstract
idea of reviewing displayed advertisements for compliance with one or more
advertising policies." Final Act. 2. Under the Guidance, reviewing
advertisements for compliance with a policy is advertising activity that falls
into the grouping of subject matter (b) certain methods of organizing human
activity, which is an abstract idea. See Guidance 52.
Appellant argues all claims together as a group. Appeal Br. 3-8. We
select independent method claim 1 as representative for the group. See 37
C.F.R. § 4I.37(c)(l)(iv). In contesting the rejection, Appellant does not
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dispute or challenge the Examiner's characterization of the abstract idea. 3
Instead, Appellant contends that "[a] claim that is directed to an abstract idea
may still be eligible under 35 U.S.C. § 101 if the claim 'contains an
inventive concept' that ensures that 'the claim is more than a drafting effort
designed to monopolize the abstract idea." Appeal Br. 4 (quoting Alice).
Appellant argues that "[ w ]hile these claims may relate generally to
'reviewing displayed advertisements for compliance with one or more
advertising policies,' they provide significantly more than this identified
abstract idea." Id.; see also Reply Br. 2 ("[T]he Appeal Brief argues that the
claims recite 'significantly more' because they provide a technical
improvement.").
In particular, Appellant contends a problem the claimed invention
solves is that
[ o ]nline systems that present large numbers of advertisements
often lack the computing resources to perform all of the
processing required to review every single one of its
previously-presented advertisements. This poses a technical
problem to the online system-namely, how to prioritize the
review of advertisements when there is not sufficient computing
resources to process all of them.
Appeal Br. 5 ( emphasis added). Appellant contends the "claims provide a
concrete, technical solution to the aforementioned problem by applying an
unconventional approach that enables an online system to selectively review
previously-presented advertisements in a way that efficiently allocates the
3 Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) ("If an
appellant fails to present arguments on a particular issue - or, more broadly,
on a particular rejection -the Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection.").
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online system's limited computing resources." Id. at 6. For example,
Appellant argues "the claims address the problem of computational resource
allocation, which only exists in relation to computer technology." Id. at 7.
These arguments discuss "limited computing resources" (id.), "a technical
improvement to a computer's ability to efficiently allocate its limited
resources" (Reply Br. 2), "limited availability of resources," "not sufficient
computing resources" (id. at 3), "the specific technical improvement to
resource allocation" (id. at 4), and "a more efficient allocation of computing
resources" (id. at 5). According to Appellant, the claims are patent-eligible
similar to McRO. 4 Id. at 7.
First, Appellant's argument is not commensurate with the scope of
claim 1, which only requires the use of "an online system" in implementing
the method of reviewing ads for compliance with an advertising policy.
Second, we are not persuaded that having insufficient computing resources
to review all presented advertisements is a technical problem. The problem
of insufficient computing resources may instead be a business problem,
which involves business issues such as insufficient financial resources and
facility space. Third, the claim's "online system" is not a "particular
machine" because the Specification describes it as having an external
communications interface, "objects representing data," storage, software
modules, a web server, "[ c ]onventional components such as network
interfaces," and a console (Spec. ,r,r 17-18), and "it may comprise a general-
purpose computing device selectively activated or reconfigured by a
computer program stored in the computer" (id. ,r 52).
4 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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The Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether 'their character as a whole is directed to excluded subject
matter."' Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). The question is whether the claims as a whole
"focus on a specific means or method that improves the relevant technology"
or are "directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery." McRO, 837 F.3d at 1314.
The claims in McRO are directed to a system of lip synchronization
and facial expressions of animated characters, and the court concluded that
the computerized system in McRO operated by rules whose implementation
was not previously available manually. 837 F.3d at 1316. In contrast, when
implementation was previously available and was conducted, although
without computer assistance, Section 101 may negate eligibility for
patenting. And although "manual review is time consuming and difficult to
scale[,] and trained model review is more prone to error" (id. at 3),
computer-based efficiency does not save an otherwise abstract method. See
Bancorp Servs., L.L.C. v. SunLifeAssur. Co. of Canada (U.S.), 687 F.3d
1266, 127778 (Fed. Cir. 2012) (performance by computer of operations that
previously were performed manually or mentally, albeit less efficiently, does
not convert a known abstract idea into eligible subject matter). As discussed
above, the claimed invention merely requires the use of a general purpose
computing or "online system" for "reviewing content for compliance with
policies" (Spec. ,r 1 ), and does not provide improvements to the functioning
of the online system, or provide improvements to any other technology or
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technical field. In other words, the claimed method merely stores a policy
on an online computing system and performs a process of selection and
comparison to determine compliance of each advertisement with the policy,
the results of which are stored. Unlike McRO, Appellant's claim does not
concern an improvement to computer capabilities, but instead relates to an
alleged improvement to the management of advertisements, for which a
computing system is used as a tool in its ordinary capacity to review
displayed advertisements for compliance with a policy. This does not
concern an improvement to computer capabilities, but instead relates to an
improvement to the abstract idea. Appellant does not direct our attention to
anything in the Specification to indicate that the invention provides an
improvement in the computer's technical functionality, or offer any
technical reasoning that demonstrates that the implementation of the steps in
claim 1 improves the functioning of the online system itself. We determine
that the claims do not "apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception," i.e., the claims do not integrate the abstract idea into a practical
application. See Guidance at 54. 5
Under Alice step two, Appellant argues that the claims are patent-
eligible because of their similarity to BASCOM6 and DDR. 7 Appeal Br. 7.
In BASCOM, the Federal Circuit held that "[t]he inventive concept described
5 For purposes of maintaining consistent treatment within the Office, these
considerations are made under Step 1 of Alice (Step 2A of Office guidance).
6 BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016).
7 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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and claimed in the '606 patent is the installation of a filtering tool at a
specific location, remote from the end-users, with customizable filtering
features specific to each end user." 827 F.3d at 1350. The court explained
that the remote location of a filtering tool having customizable user-specific
filtering features provides the filtering tool both the benefits of a filter on a
local computer and the benefits of a filter on the ISP server, which is a
technical improvement over prior art ways of filtering content. Id. at 13 50-
51. Here, Appellant has not shown any particular arrangement in the claim
as providing an inventive concept.
Contrary to Appellant's argument, the recited claim language is not
sufficient to make the invention "rooted in computer technology" like the
claims in DDR Holdings. Cf Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir. 2015) ("The patent claims here
do not address problems unique to the Internet, so DDR has no
applicability."). For example, in DDR Holdings, the Federal Circuit
determined that, although the patent claims at issue involved conventional
computers and the Internet, the claims addressed the problem of retaining
website visitors who, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be transported instantly away from a
host's website after "clicking" on an advertisement and activating a
hyperlink. DDR Holdings, 773 F.3d at 1257. The court held that those
claims were directed to statutory subject matter because they recite a
solution "necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks." Id. Unlike
the claims in DDR Holdings, Appellant does not identify any problem
particular to computer networks and/or the Internet that claim 1 allegedly
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overcomes. We, thus, agree with the Examiner that the claims do not
contain an "inventive concept," or provide something "significantly more"
that transforms the abstract idea into patent-eligible subject matter.
Therefore, we sustain the rejection under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
DECISION
The rejection of claims 1-20 under 35 U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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